[00:00:00] Speaker 05:
So we have five cases on the calendar this morning.

[00:00:03] Speaker 05:
One from retail, one from the veterans court, one from the trade court, one from the district court, and one from the clients court.

[00:00:11] Speaker 05:
A variety of jurisdictions.

[00:00:14] Speaker 05:
The first case is NewVision Gaming and Development versus FG Gaming and Tapping Vidal, 2020-1400.

[00:00:30] Speaker 05:
Mr. Dollar.

[00:00:37] Speaker 00:
Good morning, Your Honor.

[00:00:37] Speaker 00:
May I please record two issues this morning?

[00:00:40] Speaker 00:
One is the due process argument.

[00:00:42] Speaker 00:
The other is the foreign selection clause.

[00:00:44] Speaker 00:
I recognize that since the last time I was here arguing this page, we have some hurdles to get over.

[00:00:50] Speaker 00:
If I could start with the foreign selection clause issue.

[00:00:54] Speaker 00:
It's OK with the court.

[00:00:55] Speaker 00:
I'll start with that.

[00:00:56] Speaker 00:
I recognize that.

[00:00:57] Speaker 05:
In other words, you're not deciding the issue on which the board decides it's fixed.

[00:01:02] Speaker 00:
Pardon, Your Honor?

[00:01:03] Speaker 05:
You're not deciding the issue upon which the board

[00:01:06] Speaker 05:
In terms of the one on one correct.

[00:01:10] Speaker 00:
So at this point we are only challenging the proprietary of the proceeding itself.

[00:01:16] Speaker 00:
And with respect to the foreign selection clause that make us several points like first first off.

[00:01:24] Speaker 00:
Sorry.

[00:01:24] Speaker 00:
L&W now has never challenged that the form selection clause is applicable.

[00:01:29] Speaker 00:
They do make a new argument in their brief this time around.

[00:01:34] Speaker 03:
Can I just ask, as a threshold matter on this form selection issue, looking precisely at what you argued to the board, I never saw that you asked the board

[00:01:45] Speaker 03:
or said to the board, you don't have authority to decide this.

[00:01:48] Speaker 03:
You better not institute, because you don't have authority to decide.

[00:01:51] Speaker 03:
That wasn't your argument.

[00:01:53] Speaker 03:
It didn't seem to me.

[00:01:55] Speaker 03:
You seemed to be arguing not that the board was without power to institute, but instead that you might be deprived

[00:02:05] Speaker 03:
of jurisdiction if the district court acts on this so you shouldn't do it, right?

[00:02:11] Speaker 03:
Am I?

[00:02:12] Speaker 00:
Sorry, are you characterizing our argument for the board?

[00:02:15] Speaker 00:
Yes.

[00:02:16] Speaker 00:
I think that's one way to read it, but I also think that to read it in context, like for example, if you look at appendix page 214, for example, the board recognized that this was something that whether the board should do or not and decided section 324A.

[00:02:32] Speaker 03:
So I think in the context of... Correct me if I'm wrong.

[00:02:35] Speaker 03:
Am I wrong?

[00:02:36] Speaker 03:
What did you ask the board?

[00:02:37] Speaker 03:
Why did you tell the board they shouldn't institute it?

[00:02:40] Speaker 03:
What were you asking the board to do?

[00:02:42] Speaker 00:
Your Honor, it's premised on the idea that the foreign selection clause by itself, whether you consider it as a per se bar or whether you consider it as part of a discretionary analysis, that should have been enough, or at least enough to consider not instituting.

[00:02:59] Speaker 03:
And what we have said, what did you say to the board?

[00:03:02] Speaker 03:
You should not institute because.

[00:03:05] Speaker 00:
Because the other party was barred per the forum selection clause.

[00:03:10] Speaker 00:
And we did not go as far to argue and lay out a detailed analysis under say fintive or some discretionary analysis.

[00:03:18] Speaker 00:
I think the thrust of our argument, and I think the board understood this because it did say 324A and it did say again on page 214 of the appendix that

[00:03:28] Speaker 00:
It wasn't persuaded that the board should not institute and then cited 324A.

[00:03:33] Speaker 03:
OK, but I understood your argument.

[00:03:36] Speaker 03:
So am I incorrect that your argument to the board was simply, you might be deprived of power to hear this at some later date if we go to the district court and get the district court to issue an injunction?

[00:03:49] Speaker 03:
Is that a correct characterization of the argument you made to the board with respect to the institution?

[00:03:54] Speaker 00:
I don't think that was the argument saying that they would have been deprived of the institution.

[00:03:59] Speaker 00:
I think, sorry, jurisdiction, I think that... Deprived of power.

[00:04:03] Speaker 03:
I think that's a quote, but man, make me wrong about that.

[00:04:06] Speaker 00:
But again, I think that the focus on it was that perhaps the parties could have gone to a district court and gotten an injunction, which played out later.

[00:04:18] Speaker 03:
That's true, but that's, as the board said, speculative.

[00:04:25] Speaker 00:
To some extent, it is speculative, but the thrust of our argument was that the board should have at least considered that.

[00:04:32] Speaker 03:
And what did you want the board to do?

[00:04:34] Speaker 03:
I mean, again, I may disagree with you in terms of what?

[00:04:37] Speaker 03:
how you actually characterize your act to the board in the first instance.

[00:04:41] Speaker 03:
But tell us now, what did you expect the board to do?

[00:04:44] Speaker 03:
They had to read and analyze the form selection clause, or just say, no, because there's a piece of paper that says form selection clause, we shouldn't be here at all?

[00:04:53] Speaker 00:
No, you're out of the former, right?

[00:04:54] Speaker 00:
So we submit.

[00:04:55] Speaker 00:
I submit now.

[00:04:57] Speaker 00:
And again, in hindsight, maybe it would have been more to present it a little more clearly.

[00:05:00] Speaker 05:
Why would they bother with an agreement between two parties?

[00:05:04] Speaker 00:
Well, Judge Lurie, I'd posit, why shouldn't they?

[00:05:07] Speaker 00:
I mean, it's consistent with the court's opinion in Nippon.

[00:05:10] Speaker 00:
And if the parties, and this goes to a line of Supreme Court cases, and the most recent is Atlantic Marine construction, I believe 2021 from the Supreme Court, where the court says essentially that it should be an extraordinary circumstance where there's some disregard for a private party's agreement to litigate a case in a particular form.

[00:05:30] Speaker 05:
Can you also tell the district court, leave it to the board?

[00:05:34] Speaker 00:
Your Honor, I know my friend on the other side presses that argument.

[00:05:39] Speaker 00:
My position is that's a mischaracterization of the record.

[00:05:42] Speaker 00:
And we tried to explain that in our reply brief.

[00:05:46] Speaker 00:
And the point that underscores that is, eventually, when we went to the board, we filed a request for rehearing or reconsideration after the final written decision.

[00:05:54] Speaker 00:
And we still pressed the argument that the proper forum should have been the district court.

[00:05:58] Speaker 00:
per the Foreign Selection Clause.

[00:06:00] Speaker 03:
But you're saying they mischaracterized it.

[00:06:03] Speaker 03:
I think they characterized it perfectly right.

[00:06:05] Speaker 03:
They were quotes for what you said to the district court.

[00:06:09] Speaker 03:
How is it what they did not accurate?

[00:06:14] Speaker 00:
The quotes are taking out of context, because at the time, New Vision was trying to

[00:06:20] Speaker 00:
avoid duplicative proceedings, recognizing that at a later date the board still could decide not to de-institute or to terminate the proceeding if it reconsidered the forum selection clause.

[00:06:34] Speaker 03:
Okay, can I go back just to, what did you, in your

[00:06:38] Speaker 03:
recitation today what did you want what do you say the board had to have done the first instance when you came to them and you said we've got this form selection clause did you want them to analyze it and make a decision about whether or not what the impact of the form selection clause was or were you saying we've got a something called the form selection clause so you should just not institute what was what is your argument what they should have done just for let me frame it this way and this is what we're asking the court to do

[00:07:08] Speaker 00:
is vacate the decision and have the board at least consider it as part of its discretionary analysis.

[00:07:15] Speaker 00:
The board has not done that.

[00:07:17] Speaker 00:
And the board could come out to the conclusion.

[00:07:19] Speaker 04:
To consider what, the forum selection clause?

[00:07:21] Speaker 00:
The forum selection clause in the contract.

[00:07:23] Speaker 04:
How is a forum selection clause related to the stats that govern institution of the CBN?

[00:07:31] Speaker 00:
Well, we would say that it falls under 324A, Your Honor.

[00:07:34] Speaker 00:
The board's general discretionary analysis

[00:07:38] Speaker 00:
And if the board, if the board had done... You can't get more specific than that.

[00:07:42] Speaker 04:
You can't make a, relate the statute, the statute governing or your foreign selection clause of the statutes that govern institution of CBN.

[00:07:53] Speaker 04:
Well, for CBN... You can't articulate an argument on that.

[00:07:56] Speaker 00:
For CBN, C24A is the primary statute that governs.

[00:07:59] Speaker 00:
There's some other ones that decide PR615B, for example.

[00:08:02] Speaker 04:
I mean, what way does it govern?

[00:08:04] Speaker 00:
Pardon?

[00:08:05] Speaker 04:
What way does it govern?

[00:08:07] Speaker 00:
Well, I think consistent with this court's case law, 324A provides the board discretion on whether to institute or not.

[00:08:15] Speaker 00:
Now, the PTO takes the position that it has complete discretion of whether to institute or not.

[00:08:20] Speaker 00:
Our primary position solely is that the legal analysis of that discretionary

[00:08:25] Speaker 00:
function was flawed because... Okay, I don't understand.

[00:08:28] Speaker 03:
What you want the board to do?

[00:08:30] Speaker 03:
To analyze the form selection clause and to say, yes, this looks... Either no, this doesn't look like an agreement that would dislodge our ability to do this, or it doesn't.

[00:08:43] Speaker 03:
You want them to analyze the impact of the form selection clause?

[00:08:46] Speaker 00:
Correct.

[00:08:47] Speaker 03:
Just like a district... And what happens

[00:08:49] Speaker 03:
if they go against G Bend.

[00:08:51] Speaker 03:
Are you claiming that we have the ability to review that?

[00:08:54] Speaker 00:
No, Your Honor.

[00:08:55] Speaker 00:
No, no.

[00:08:56] Speaker 00:
I think that's our dividing line.

[00:08:58] Speaker 03:
So we're asking for the same type of analysis that any party would get in the district court or, for example, in the Nippon case, where- So you're saying we don't have authority to review their decision in that regard, but we have authority to review whether they, in their discretion, made a decision.

[00:09:15] Speaker 00:
Is that your position?

[00:09:17] Speaker 00:
You have the ability to review their decision to the extent it's contrary to law in terms of it just ignores, completely ignores a category of highly relevant evidence.

[00:09:27] Speaker 00:
Again, going back to the Supreme Court case law, it says parties should have their forum selection clauses or contracts generally regarded or respected.

[00:09:36] Speaker 00:
And that just wasn't the case.

[00:09:37] Speaker 00:
Again, if it goes back on remand and the board comes out on a different way and considers the new information that

[00:09:45] Speaker 00:
my opponents included in their response brief and says, no, you either waived it or in the interest of justice or in the interest of proceeding through it, we've considered it, but we don't feel it carries enough weight, then we would not have a disagreement with that analysis.

[00:10:00] Speaker 03:
And that would be consistent with- And that's not reviewable.

[00:10:02] Speaker 00:
Correct.

[00:10:04] Speaker 00:
Correct.

[00:10:04] Speaker 03:
So you're saying what is reviewable is what?

[00:10:09] Speaker 00:
is a flawed legal analysis by entirely excluding the most relevant piece of information in terms of whether the board should institute or not.

[00:10:20] Speaker 03:
Namely, whether it should enable- So what if the board says, okay, we'll look at it on Remia, and the board says, yeah, this appears to be what the party's intended, which I think is not necessarily the case here.

[00:10:30] Speaker 03:
But even if they say, yes, it appears that's the party's intent, but we still, we, the board, still think that we have the authority and the discretion to decide this IPR nonetheless.

[00:10:44] Speaker 03:
Right.

[00:10:44] Speaker 03:
Unless a student may say that.

[00:10:46] Speaker 03:
And you agree.

[00:10:47] Speaker 03:
You're saying that would not be reviewable by us.

[00:10:51] Speaker 00:
Yes, Your Honor, you're correct.

[00:10:52] Speaker 00:
I strongly disagree with the way the board would come out, because I think generally, a forum selection clause, again, unless it's extraordinary circumstances, it should be respected.

[00:11:03] Speaker 00:
Now, the board can come out differently.

[00:11:04] Speaker 03:
That's not the only way you have to get to where it seems you maybe wanted to go, at least at some point, which is to go to the court and ask the court to enjoin

[00:11:14] Speaker 03:
the parties from going to the PTAB.

[00:11:16] Speaker 03:
We have other cases in which that was the revenue sought.

[00:11:20] Speaker 03:
And you're obviously desperate now to get the board to change its mind to get this form selection clause effectuated.

[00:11:27] Speaker 03:
Why don't you just go to the district court?

[00:11:28] Speaker 00:
That's a good question.

[00:11:30] Speaker 00:
I would push back a little bit about characterizing this as desperate.

[00:11:33] Speaker 00:
I'm trying to be firm.

[00:11:34] Speaker 00:
But in any event... Sorry, I apologize.

[00:11:38] Speaker 00:
No, no, no.

[00:11:38] Speaker 00:
There's no need to apologize.

[00:11:39] Speaker 05:
You're approaching your rebuttal time.

[00:11:44] Speaker 05:
Do you want to spend a minute to talk about mobility?

[00:11:48] Speaker 00:
Your Honor, I can, unless Judge Reina has another question on this point.

[00:11:53] Speaker 04:
Yes.

[00:11:54] Speaker 04:
So in answer to my question, you said that there's a relationship between the Foreign Selection Clause

[00:12:03] Speaker 04:
and the statutes that govern institution by the board in the CVM case, right?

[00:12:09] Speaker 04:
Yes, Your Honor.

[00:12:10] Speaker 04:
OK.

[00:12:11] Speaker 04:
If that's the case, then how is it that we have jurisdiction to review that issue?

[00:12:16] Speaker 00:
That's a very fair question, and I think it's one of the hurdles that we need to get over, the Apple v. Vidal case.

[00:12:23] Speaker 04:
Well, you said here in court, you argued here in court that there is this relationship.

[00:12:27] Speaker 00:
Right.

[00:12:28] Speaker 04:
And our law is pretty clear on that.

[00:12:30] Speaker 04:
Our case law is pretty clear that once you have a relationship with the incentives that govern an institution, that this court does not have jurisdiction to review.

[00:12:41] Speaker 00:
What I would put back on that a little bit in terms of relationship, I would view it under the opinion of, in SAS, and where the Supreme Court specifically says that 706

[00:12:56] Speaker 00:
to A and C still apply in this context.

[00:12:59] Speaker 04:
You're arguing that the foreign selection clause does have a, is related to the institution's statutes.

[00:13:06] Speaker 00:
It's related in the general context, but it's not related to the merits of the... If it is related in the general context, then it's clear we don't have jurisdiction.

[00:13:14] Speaker 00:
I respectfully disagree with that in that no court yet has said

[00:13:18] Speaker 00:
that the board is entirely free to ignore a forum selection clause, and that this court can't review it.

[00:13:24] Speaker 00:
Just closing point, just to get back to your questions as president.

[00:13:27] Speaker 04:
Maybe no court has said that, because they don't have jurisdiction to make that announcement.

[00:13:33] Speaker 00:
Well, a court can certainly make the announcement and dismiss the case if that's the conclusion that you come to.

[00:13:39] Speaker 04:
And if that is the conclusion... That no court, especially this court, has held to get the announcement that that's possible.

[00:13:46] Speaker 00:
Well, no court has held that

[00:13:48] Speaker 00:
Well, this court hasn't held that there's a jurisdiction lacking under these circumstances.

[00:13:54] Speaker 00:
Again, if you come to that conclusion, we'd welcome that clarification in the law.

[00:13:58] Speaker 04:
The last point... Well, it seems to me, counsel, that if I follow your line of reasoning, which I asked you to articulate, it would lead to that conclusion that we don't have jurisdiction to review this argument.

[00:14:12] Speaker 00:
Well, I leave it at...

[00:14:13] Speaker 00:
We think that we have stronger ground under the reasonings asked.

[00:14:18] Speaker 00:
We recognize that Apple versus the Doll and the Alarm.com case present hurdles on that front.

[00:14:24] Speaker 00:
Just one last point, Judge Lurie.

[00:14:26] Speaker 00:
Judge Price, just getting back to your point in terms of why we didn't go to the district court.

[00:14:30] Speaker 00:
And again, in hindsight, I would certainly acknowledge, given the development of this course case law and other case law, particularly the Nippon case and the Canoe case,

[00:14:39] Speaker 00:
In hindsight, perhaps that's maybe where we should have gone.

[00:14:43] Speaker 00:
But hindsight's 20-20.

[00:14:45] Speaker 00:
And at that time, the law, we believe, was unsettled.

[00:14:48] Speaker 00:
There was no precedential opinion from this court saying that the board would be able to not consider a forum selection clause in terms of declining to institute.

[00:14:59] Speaker 00:
And Your Honor, I'll reserve the rest of my time.

[00:15:01] Speaker 04:
No, I do have one less.

[00:15:02] Speaker 04:
What is it that you are asking that we do?

[00:15:07] Speaker 04:
What relief are you seeking before this court?

[00:15:11] Speaker 00:
The direct relief is to vacate the board's decision and to order them to consider the forum's selection clause as part of their announcement.

[00:15:17] Speaker 04:
To vote for the board?

[00:15:18] Speaker 00:
Correct, Your Honor.

[00:15:19] Speaker 04:
Under the CBM process?

[00:15:20] Speaker 00:
Correct, Your Honor.

[00:15:23] Speaker 00:
I know that's expired and I don't know, we haven't really addressed how that would play out.

[00:15:28] Speaker 00:
There was funds that

[00:15:29] Speaker 00:
and I'll reserve the rest of my time.

[00:15:31] Speaker 00:
I'll rest on the brief in terms of the due process unless the court has any questions.

[00:15:34] Speaker 05:
Right.

[00:15:35] Speaker 05:
Well, you reserved 12 seconds, but we'll give you two minutes.

[00:15:38] Speaker 05:
Thank you, Judge Laurie.

[00:15:46] Speaker 05:
You're splitting your time and you're taking eight minutes.

[00:15:49] Speaker 01:
Yes, Your Honor.

[00:15:50] Speaker 01:
Good morning, Your Honors.

[00:15:51] Speaker 01:
May it please the court.

[00:15:53] Speaker 01:
I think what you heard from

[00:15:54] Speaker 01:
My opposing counsel today was that the institution decision was tied to the institution statute, section 324A.

[00:16:04] Speaker 01:
That's consistent with what New Vision argued at the board pre-institution in its pre-institution certify.

[00:16:11] Speaker 01:
That's consistent with the manner in which the board instituted trial in the underlying statute.

[00:16:17] Speaker 03:
I get that.

[00:16:18] Speaker 03:
But is it your view that the board can never review a forum selection clause?

[00:16:23] Speaker 01:
My position, Your Honor, is that there is no authority of which I'm aware that affirmatively gives the board

[00:16:33] Speaker 01:
the right or authority to do so.

[00:16:36] Speaker 01:
And that was the basis on which the board exercised its discretion to Institute because lacking authority saying that the board was empowered to do that, they decided not to take it.

[00:16:49] Speaker 03:
What if hypothetically, and I'll ask the government this too, but let's say, I mean, the form selection clause here is

[00:16:57] Speaker 03:
than what the hypothetical I'm going to give you.

[00:16:59] Speaker 03:
The hypothetical is if the parties agree in a license agreement that if any disputes with respect to the validity of any claims here, including patents and issues, will not be heard by the Patent Trial Appeal Board.

[00:17:16] Speaker 03:
It will only be heard by the district court of Southern District of California.

[00:17:22] Speaker 03:
And then the petitioner tried to get a CBM instituted.

[00:17:28] Speaker 03:
Does the board just ignore that forum selection clause and go ahead?

[00:17:33] Speaker 01:
Well, I think the board would be faced with a discretionary choice, Your Honor.

[00:17:39] Speaker 03:
So you're not saying the board can't look at it.

[00:17:41] Speaker 03:
You're saying it can decide whether it wants to look at it.

[00:17:44] Speaker 01:
I'm saying there's no authority saying affirmatively that they can.

[00:17:49] Speaker 01:
And so if the board decided to do so, there's no authority saying they can't.

[00:17:56] Speaker 01:
But the authority that exists to date, of which I'm aware all says, that an aggrieved patent owner in that kind of situation has to seek relief from a district court.

[00:18:07] Speaker 03:
And on the review ability, because we've got the two questions with respect to every question we ask.

[00:18:11] Speaker 03:
It's one, what should the board do?

[00:18:13] Speaker 03:
And two, is it reviewable by ask no matter what they do?

[00:18:16] Speaker 03:
So is it your view that that

[00:18:18] Speaker 03:
Just the exercise of discretion, however it turns out, is reviewable or not reviewable?

[00:18:25] Speaker 01:
If a matter of discretion, it would not be reviewable, Your Honor.

[00:18:28] Speaker 03:
The board, in those instances- Only because it's their discretion, not because it's tied to the institution decision, because it's about something other than the institution decision?

[00:18:38] Speaker 01:
No, if it's tied to the institution decision as well, Your Honor, it would not be reviewable.

[00:18:44] Speaker 01:
It's only in those rare instances, for example, where the board exceeds its statutory authority, where there might be an exception to the no reviewability

[00:18:54] Speaker 01:
limitation, but that's not what we're dealing with, and as I understand your hypothetical, that's not what you're asking.

[00:19:05] Speaker 05:
Any further?

[00:19:06] Speaker 01:
If I may, Your Honor.

[00:19:09] Speaker 01:
Opposing counsel, you asked opposing counsel why didn't new vision seek an injunction in district court.

[00:19:16] Speaker 01:
It's more than just

[00:19:18] Speaker 01:
in hindsight that maybe they should have, it's that they affirmatively embraced the PTAB in the district court, right?

[00:19:26] Speaker 03:
They sought a partial motion to say the district court proceedings only... Well, I get one of the answers that I think he had in his brief, and he didn't raise it today, but one of his responses to that is that, well, heck, once

[00:19:39] Speaker 03:
institution once we lost that battle and the board instituted we were playing on a different field so now we knew that the board had instituted we didn't have any appeal rights and so yeah now our choice is to go our only choice or a reasonable choice at least is now given that institution we're going to go to the we're going to go and I get the district court to status why isn't that a reasonable position and why does that prejudice there are other arguments

[00:20:07] Speaker 01:
Well, I don't think it's accurate because I don't think it's reason that they could not have sought an injunction.

[00:20:13] Speaker 01:
The reason that they sought a partial stay in the court below is for strategic advantage.

[00:20:17] Speaker 01:
What they wanted to do is only stay the patent eligibility challenge in the district court, proceed in the PTAB.

[00:20:24] Speaker 01:
But the part of the case that they sought not to stay were their affirmative contract related claims and that sort of thing.

[00:20:31] Speaker 01:
That is what they wanted in district court.

[00:20:33] Speaker 01:
So they actually embraced the notion of patent eligibility being challenged in the PTAP.

[00:20:39] Speaker 01:
There's an additional reason as well that's discussed in the briefs, Your Honor.

[00:20:42] Speaker 01:
They cited to the district court their ability to amend claims in the PTAP, which is an additional advantage and an additional reason they embraced litigating eligibility in the PTAP.

[00:20:53] Speaker 04:
Did they ever move for amendment to the?

[00:20:57] Speaker 01:
The motion was denied in the final written decision, Your Honor.

[00:21:05] Speaker 01:
If there's nothing further, Your Honor, I'll see the rest of my time.

[00:21:11] Speaker 01:
Thank you.

[00:21:18] Speaker 02:
Good morning.

[00:21:19] Speaker 02:
Good morning.

[00:21:20] Speaker 02:
Thank you, Your Honor, and may it please support Joshua Salzman on behalf of the director.

[00:21:25] Speaker 02:
Given that argument has really just focused today on the Forum Selection Clause, I'm happy to begin with that.

[00:21:31] Speaker 02:
Though I should note the government has made a fairly limited submission on that point.

[00:21:35] Speaker 02:
We have just argued Proclusion of Review under Section 32040.

[00:21:39] Speaker 03:
It does seem to me that the issues we're concerned about have very much to do with the Board and the Board's position on these things, the things we've talked about this morning.

[00:21:47] Speaker 03:
So let me ask you a question.

[00:21:48] Speaker 03:
In your brief, this is on reviewability.

[00:21:51] Speaker 03:
Yes.

[00:21:52] Speaker 03:
In your brief, you argue that under Quozo 314D, Bar's review, at least of matters, quote, closely tied to the application and interpretation of statutes related to the institution decision.

[00:22:06] Speaker 03:
And then in your brief elsewhere, you acknowledge that the form selection clause issues are outside of the board's expertise.

[00:22:16] Speaker 03:
How is an issue that's outside the board's expertise closely tied to the institution's expertise?

[00:22:21] Speaker 02:
So I think our brief explains that it is bound up in Section 324A, and I understood counsel for New Vision to concede just that point.

[00:22:31] Speaker 03:
Yeah, I agree with you that he conceded it.

[00:22:34] Speaker 03:
I'm not sure that that gets, you know, concessions just take you so far.

[00:22:38] Speaker 03:
We still have to construe a law.

[00:22:40] Speaker 02:
Of course, Your Honor, and I'm happy to justify it on its own merits and explain why this case lines up so well with Thrive.

[00:22:47] Speaker 02:
And I'd like to begin, actually, with part 3c of Thrive, which lays out the policy underverting the preclusion of review.

[00:22:57] Speaker 02:
And one of the things that explains, in cases like this one where you're dealing with an instituted proceeding, not a denial of institution, that there's something that's very strange when you have a case like this one where the board has

[00:23:09] Speaker 02:
already, rightly or wrongly, commenced on review of a patent, reconsider the validity of it, conclude that the claimed invention is unpatentable.

[00:23:19] Speaker 02:
You then have the patent holder no longer contest that, as I understood counsel for New Vision to do with Judge Laurie, and then to have the patent spring back to life finding not just the IPR or the CBM petition or

[00:23:33] Speaker 02:
But the public at large... No, I appreciate that.

[00:23:36] Speaker 03:
But what about hypothetically, the hypothetical I posed the other side with, oh, your friend, which is what if the forum selection clause here was not what it actually is in my reading, but at least then absolutely conclusively under a license agreement they said if there are any questions with respect to validity,

[00:23:56] Speaker 03:
Both parties are required to go to the Southern District of California to litigate those and not to the PTO.

[00:24:03] Speaker 03:
And the board gets that on its desk on the institution question.

[00:24:08] Speaker 03:
Is your answer that they should ignore it and they could get away with saying we don't care about forum selection clauses, we just care about patent statutes?

[00:24:18] Speaker 03:
and they're required to do anything about that?

[00:24:22] Speaker 02:
So I think it is perfectly rational for USPTO to take the position that

[00:24:29] Speaker 02:
District courts are better situated to address those concerns and to say, it's not that we're ignoring them.

[00:24:36] Speaker 02:
This court recognized in Nippon, there's a process and a procedure available to patent holders who've entered into license agreements or other contracts.

[00:24:47] Speaker 03:
So you agree with the other side, that the board has the discretion to either look at it if it wishes, and consider it, or to not look at it?

[00:24:55] Speaker 02:
Yes, Your Honor, we certainly have to just correct it and deny it.

[00:24:59] Speaker 03:
What are the criteria the board would use in terms of when they look at it and when they don't?

[00:25:05] Speaker 02:
I think one option would be to have, you know, the director put out guidance on something like that.

[00:25:12] Speaker 02:
But I think the more fundamental point, no, there's not at this point.

[00:25:17] Speaker 02:
But candidly, the board doesn't want to be in this business of evaluating form selection clauses.

[00:25:23] Speaker 02:
We think district courts are far better situated to be doing that.

[00:25:27] Speaker 02:
And we are very happy to have these agreements enforced, but not enforced in the context of an opposition to institution, but rather in the context of somebody going to district court.

[00:25:38] Speaker 03:
So what if the board, a particular board, since there is no guidance from the director as of now, the board says, gee, this is a strong form selection clause.

[00:25:47] Speaker 03:
We're not going to institute because of it.

[00:25:51] Speaker 03:
They're allowed to do that in your view.

[00:25:53] Speaker 02:
Yes.

[00:25:55] Speaker 02:
Okay.

[00:25:55] Speaker 03:
And are all of these decisions not reviewable by us?

[00:25:59] Speaker 02:
Yes.

[00:25:59] Speaker 02:
320-40, I think, is pretty clear that discretionary denials are not subject to review.

[00:26:06] Speaker 02:
And as I think was discussed earlier, this court's recent decision, Apple v. Medall, only underscores that.

[00:26:13] Speaker 04:
What's your statutory authority for having the basis to review the foreign selection

[00:26:20] Speaker 02:
I think it is bound up in just the same kind of ability to just deny for discretionary reasons that was approved or at least was held to be unreviewable in Apple versus Vidal.

[00:26:34] Speaker 02:
So it would be essentially an allegation.

[00:26:36] Speaker 04:
Same would be true to any issue that's put before the board.

[00:26:39] Speaker 04:
You have discretion before any issue that's brought to you.

[00:26:43] Speaker 04:
There's no limit.

[00:26:44] Speaker 02:
Well, there's certainly no judicial review.

[00:26:47] Speaker 02:
I think that there are political checks in place that if the board stops... The board's authority to review.

[00:26:53] Speaker 04:
It seems to me you're arguing the board has plenary authority.

[00:26:56] Speaker 04:
You're calling discretionary, but it's really plenary.

[00:26:59] Speaker 04:
The board has authority to review anything it wants.

[00:27:03] Speaker 02:
Well, the board has to comply, and it should comply, and always endeavors to comply, with the statutory limitations on its authority.

[00:27:13] Speaker 04:
So for example... What's the statutory limitation on this authority to review a women's selection clause?

[00:27:20] Speaker 02:
I'm not sure there is one, but I do think it's bound up in the 324A question, and that's why there's a provision... So in the absence of that, you've exercised indiscretion to institute review.

[00:27:34] Speaker 04:
So it seems to me you're arguing or your statements take you to a point to where the board has authority to review almost anything it wants.

[00:27:45] Speaker 04:
And that flies in the face of what we know to be case law and Supreme Court cases says that the agency's authority is not preliminary, that there are instances.

[00:27:59] Speaker 02:
Are you referring to SAS or to another case, Your Honor?

[00:28:04] Speaker 04:
I'm referring generally to a law, but you can start with SAS.

[00:28:08] Speaker 02:
I'll be happy to distinguish SAS, just as this court did in Apple v. Vidal.

[00:28:12] Speaker 02:
What Apple v. Vidal recognizes is SAS wasn't about the institution itself.

[00:28:18] Speaker 02:
It was about the conduct of the instituted proceeding, and particularly the requirement under 35 U.S.P.

[00:28:23] Speaker 02:
318 that the final written decision, not the institution opinion, the final written decision addressed all of the claims in the petition.

[00:28:32] Speaker 02:
So there, that brought it outside of the preclusion

[00:28:36] Speaker 03:
Let me ask you, if the board decides to take a look, would you say it has the discretion to do?

[00:28:41] Speaker 03:
So let's assume the board says, this form selection clause doesn't do it for us.

[00:28:47] Speaker 03:
We don't think there's anything that precludes us from going forward, that this doesn't really have any teeth to it.

[00:28:53] Speaker 03:
And simultaneously, they go up and it runs into district court to try to get an injunction with respect to the form selection clause.

[00:29:01] Speaker 03:
Does anything the board has said have any effect, does stop or affect, or anything on what the district court does?

[00:29:10] Speaker 03:
Or can those just... And we get to review what the district court says.

[00:29:15] Speaker 03:
So if the district court construes the form selection clause and says it says X and not Y, that's reviewable.

[00:29:21] Speaker 03:
But when the board does it, it's not reviewable.

[00:29:23] Speaker 02:
I think that would be right in theory, but to be clear, I just want to step back and say, well, I think we have the authority to do this.

[00:29:30] Speaker 02:
As I said before, the board does not want to be in this business.

[00:29:33] Speaker 02:
We want people going to district court to construe these, and while I think

[00:29:38] Speaker 02:
under cases like the Apple vs. Vidal which approved finted discretionary denials, I don't think that it necessarily follows that the board wants to be doing this and we would are much happier to have the private parties litigate their own contractual rights in district court if there is a very clear forms of... Would the board stay?

[00:29:58] Speaker 03:
I mean the board is under pretty firm time limits.

[00:30:01] Speaker 03:
Would the board stay if proceeding?

[00:30:04] Speaker 03:
If we say they want the district courts, presumably they would abide by whatever the district court decides, would there be a scenario in which the board would have to decide?

[00:30:14] Speaker 03:
They went to the district court.

[00:30:16] Speaker 02:
So what you see happening, as in Nikon and some of the other cases, what you have are folks going to district courts and seeking preliminary injunctions expedited proceedings in light of the statutory timetables that require the board to move relatively quickly.

[00:30:32] Speaker 02:
And if the district court concludes that the forum selection clause is applicable, then they direct the IPR or CBM petitioners to withdraw the petition.

[00:30:44] Speaker 02:
And and that is just a much more efficient and it's also better tailored to the relative expertise of the district court and and the board Thank you counsel your time is just about coming to an end.

[00:30:59] Speaker 05:
Okay.

[00:31:01] Speaker 00:
Thank you your honor couple of points in those few minutes Let me just pick up on the last point that my colleague mentioned

[00:31:10] Speaker 00:
We strongly disagree that there's any gained efficiency by requiring parties to go to district court, file a preliminary injunction, go through that process, and then get an order in joining the board from proceeding with a PTAB proceeding, when the board is certainly capable of doing that analysis from the get-go.

[00:31:31] Speaker 00:
The second point, Your Honor, is in terms of

[00:31:34] Speaker 00:
to what extent the Forum Selection Clause analysis is related to the institution decision.

[00:31:39] Speaker 00:
I agree with my colleague from the government in that it's generally wrapped up in Section 324, but then going back to QOZO, the language of QOZO and the language of STAS focuses on whether it's really focused like dealing with the patentability analysis.

[00:31:54] Speaker 00:
And this has nothing to do with the patentability analysis.

[00:31:56] Speaker 00:
The board can look at this and consider the Forum Selection Clause.

[00:32:01] Speaker 00:
They consider settlement agreements.

[00:32:02] Speaker 00:
The board considers RPI issues, real party interest issues.

[00:32:07] Speaker 00:
Those all tie up in terms of contractual relationships.

[00:32:09] Speaker 00:
And so there's no reason why the board couldn't do that here.

[00:32:12] Speaker 00:
And ultimately, what we're asking for is essentially the same outcome that would happen, assuming our view of the forum selection clause is correct, that would occur if we went roundabout to the district court.

[00:32:27] Speaker 00:
And I guess we just don't really see any reason why the board should be allowed to wholesale ignore this eminently important category of evidence of whether they should institute or not.

[00:32:41] Speaker 00:
Nippon, the Nippon case in the very last paragraph of the opinion, Judge Lurie, as you know, it mentions that there's nothing against public policy in enforcing foreign selection clauses here.

[00:32:51] Speaker 00:
And that's what we're asking for here.

[00:32:53] Speaker 00:
We're just asking for the board to at least consider it.

[00:32:56] Speaker 00:
And unless there are any further questions, we'll rest.

[00:33:00] Speaker 05:
Thank you.

[00:33:02] Speaker 05:
Thank you, Your Honor.